Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-14 are pending in this application.
Election/Restrictions
Applicant’s election with traverse of Group I and a single disclosed species (Compound 294) in the reply filed on 04/03/2026 is acknowledged.
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The traversal is on the ground(s) that “claim 15 of Group II has been cancelled and claims 11-14 are drawn to a method of treatment using the compound of Formula I”. The examiner disagrees with applicant’s argument. Applicants simply deleted one Group and introduced a new Group II. The amended claims 11-13 are drawn to a method of treatment and would replace the original Group II. Groups I-II lack unity of invention. The special technical feature of Group II involves a therapeutic technique and additional ingredients that is not present in the special technical feature of Group I. Furthermore, coexamination of the additional group would require search of subclasses unnecessary for the examination of the elected claims. Therefore, coexamination of the additional inventions would require a serious additional burden of search.
The requirement is still deemed proper and is therefore made FINAL.
Note that if Group I is found allowable, then the examiner would rejoin the method claims 11-13 of Group II. In order to expedite prosecution after rejoinder, the examine recommends that applicants delete “preventing” from claims 11-13 and also recite specific diseases in claims 11-12 as it was done in claim 13.
The examiner searched the elected species and found no prior art. The search was expanded and stopped when a prior art was found. If the examiner finds another prior art after the response of this Office Action, the next Office Action will be Final. Note that the examiner recommends that applicants review their invention.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clapham et al. Tetrahedron Letters (2002), 43(31), 5407-5410. Cited reference teaches the following five prior art compounds that are the same as applicants when applicants Formula I has the following substituents: R1 = H; R2 = -CF3, -NO2, -OMe, -N(CH3)2; and R3 = piperidinyl.
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Since said prior art compounds are the same as applicants, a 102(a)(1) rejection is proper.
Objection
Claims 5, 8-10 and 14 are objected to as being dependent upon a rejected base claim. Note that the search is ongoing.
Information Disclosure Statement
6. Applicant’s Information Disclosure Statement, filed on 06/25/2025, 02/06/2025, 11/21/2024, 07/24/2024, 12/06/2023 and 12/05/2023 has been acknowledged. Please refer to Applicant’s copies of the 1449 submitted herewith.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Kahsay Habte/
Primary Examiner, Art Unit 1624
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